Federal Court Confirms the Importance of Inherent Distinctiveness in Trademark Confusion

A decision of the Federal Court confirms that a lack of inherent distinctiveness was the most important element in determining whether the marks in issue were confusing.  996660 Ontario Ltd. v. Falesca Importing Ltd. 2026 FC 114

The Facts

The applicant filed a trademark registration for the trademark FALESCA MOLISANA, based on proposed use in association with Italian food products. The opponent opposed the application primarily on the basis that the FALESCA MOLISANA trademark was not registrable because it was confusing with the REGINA MOLISANA trademarks owned by the opponent for use in association with similar food products. The opposition proceeded to a hearing before the Trademark Opposition Board.

The Decision of the Trademarks Opposition Board

The Hearing Officer outlined the applicable general legal principles that apply to a confusion analysis. The issue is considered as a matter of first impression in the mind of a casual consumer somewhat in a hurry, who sees the applied-for trademark at a time when they have no more than an imperfect recollection of the opponent’s trademark. This casual, hurried consumer does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the trademarks.

Applying the test for confusion is an exercise in finding facts and drawing inferences. All surrounding circumstances of the case must be considered, including those listed at section 6(5) of the Act, namely:

a) the inherent distinctiveness of the trademarks and the extent to which they have become known; 

b) the length of time the trademarks have been in use; 

c)  the nature of the goods, services or business; 

d)  the nature of the trade; and

e) the degree of resemblance between the trademarks, including in appearance or sound or in the ideas suggested by them. [subsection 6(5)(e)]

The Hearing Officer found the parties’ trademarks were inherently weak as they used the word “Molisana”, which was not disputed to be a demonym for people or things from the geographic region of Molise, Italy. As such, the parties’ trademarks were “fairly descriptive, or at the very least suggestive, of the place of origin of the associated goods”, lowering their inherent distinctiveness. “Falesca” had no immediate apparent meaning, while “Regina” invoked an association with the queen, and the idea of “a queen from the region of Molise”. When the parties’ trademarks were considered as a whole, the Hearing Officer found that the FALESCA MOLISANA mark was “somewhat more inherently distinctive” than the REGINA MOLISANA trademarks.

It was also found that the REGINA MOLISANA trademarks had become known in the Canadian marketplace to a substantial extent and therefore had acquired a substantial degree of distinctiveness. 

The length of time in use factor as well as the nature of the goods and nature of the trade factors all favoured the opponent.

Concerning the degree of resemblance, the parties’ trademarks each included the word “Molisana” which was not inherently distinctive, and the other words in the trademarks, “Falesca” and “Regina”, were the most unique elements. These elements served to distinguish the marks as they did not bear any appreciable degree of similarity, particularity in the idea suggested. When considered in their entirety “the trademarks [were] substantially more different than they [were] similar.”

The opposition was rejected.

The Appeal

The Opponent appealed to the Federal Court. No new evidence was filed.  

The issues raised in the appeal primarily related to:

1. low degree of inherent distinctiveness attributed to the REGINA MOLISANA trademarks;

2. the insufficient weight given to the evidence of acquired distinctiveness of the REGINA MOLISANA trademarks;

3.  the improper weighing of the factors under subsection 6(5). 

   
   

Inherent Distinctiveness

The Judge said that while acquired distinctiveness was grounded on consumer recognition and perception, inherent distinctiveness is not. Inherent distinctiveness is determined by whether features of originality, uniqueness and inventiveness are present in the mark itself. This is a matter of fact, not perception.

These features were equally absent from a term that described a geographic location, or one that describes the people or things associated with a place (a demonym).

The Hearing Officer did not err in law in applying the same principles to a demonym as for a geographic descriptor and relying on the same jurisprudence.

Acquired Distinctiveness

While the Hearing Officer did not expressly weigh its findings on inherent distinctiveness with its findings on acquired distinctiveness to provide an overall conclusion under subsection 6(5)(a) in one party’s favour, this was not a palpable and overriding error. A reasonable interpretation of the decision was that the Hearing Officer did not consider paragraph 6(5)(a) to strongly favour either party.

In addition, the acquired distinctiveness of the REGINA MOLISANA trademarks was diminished by their co-existence in the marketplace with LA MOLISANA trademarks, used by another trader for similar goods.

Weighing the Factors

It was undisputed that the Hearing Officer was required to address all factors in its subsection 6(5) analysis although the factors need not be given equal weight. The Hearing Officer considered the overlap between the parties’ goods and channels of trade; however, he found the lack of resemblance between the parties’ marks and the weakness of the “Molisana” element in the parties’ marks were significant factors and afforded these aspects greater weight overall. There was no error.

Comment

Leaving aside the careful analysis of the decision the fact remains that the extent of inherent distinctiveness of a mark strongly influences the ambit of protection available to it. A mark consisting of a geographic designation will have limited distinctiveness and small differences will distinguish it from other marks.

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John McKeown

Loopstra Nixon LLP.  

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This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. Copyright © John Mckeown, All rights reserved. To unsubscribe to the IP Update, please send me an email at jmckeown@Ln.Law

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